Access to Relevant Prior Art (RPA) Initiative - Inclusion in the Initiative
What conditions must the application satisfy in order to be included in the Phase I of the RPA Initiative?
(i) The application must be a non-reissue, non-provisional application filed under 35 U.S.C. 111(a) with a claim for benefit under 35 U.S.C. 120 or 121 of only a single prior U.S. parent application that was filed under 35 U.S.C. 111(a) or entered national stage under 35 U.S.C. 371 (the parent application can claim priority or benefit of other applications only under 35 U.S.C. 119);
(ii) The application is filed on or after November 1, 2018 and assigned to art unit 2131 or filed on or after January 1, 2019 and assigned to one of art units 1616, 1731, 2431, 2675, 2879, 2922, 3635, and 3753, and (iii) the claim for benefit to the parent application must be made in the application and reflected on the filing receipt before the application completes pre-examination processing.
When will my application be evaluated for inclusion in the RPA Initiative?
The USPTO will determine whether an application meets the conditions for inclusion in the first phase of the RPA Initiative after the Office of Patent Application Processing completes pre-examination processing of the continuing application. That is, a filing receipt has been issued, there are no outstanding pre-examination notices (e.g., Notice to File Missing Parts), and the application has completed classification.
How will I know if the Office has included my application in the RPA Initiative?
You will receive a Notice of Imported Citations informing you of your application’s inclusion in the Initiative and listing the citations from the immediate parent application that have been imported into the application.
Do I need to reply to the Notice of Imported Citations?
No, there is no requirement to respond to the Notice of Imported Citations.
Access to Relevant Prior Art (RPA) Initiative - General
What is the RPA Initiative?
The RPA Initiative seeks to leverage electronic resources to improve the examiner’s access to relevant information from applicant’s other related applications. These resources may include related U.S. applications, international applications under the PCT, and counterpart foreign applications by the same applicant.
What resources are utilized in Phase I of the RPA Initiative?
The RPA Initiative will be implemented in phases, with phase I importing citations from the immediate U.S. parent application into a continuing application. In particular, the relevant information will be the citations listed on forms PTO/SB/08 (or equivalents) and PTO-892 in the immediate U.S. parent application.
How does the RPA Initiative affect my duty of disclosure?
An applicant’s duty to disclose information under 37 CFR 1.56 in the continuing application will continue to be satisfied for information considered in the parent application and will be satisfied for any additional information made of record by the Office in the continuing application.
Will applications in the RPA Initiative receive expedited examination?
No, the applications will be taken up for examination in the order in which they are filed in accordance with MPEP 708.
What should I do if I notice one or more citations from the parent application have not been imported into the continuing application?
If the Applicant would like these citations printed on the face of the continuing application, applicant would need to submit them on an IDS in compliance with 37 CFR 1.97 and 1.98. Otherwise, the Examiner will still consider the documents corresponding to these citations that have not been imported in accordance with MPEP 609.02.
Access to Relevant Prior Art (RPA) Initiative - Importation
When will the citations from the parent application be imported into the continuing application?
The citations from the parent application will be imported once the continuing application is determined to meet the conditions for the Initiative. That determination will occur after the continuing application completes pre-examination processing.
What information from the parent application will be imported into the continuing application?
All citations, both considered and unconsidered in the parent application, will be imported into the continuing application. The citations are those corresponding to U.S. patent documents, foreign patent documents, and non-patent literature (NPL) documents, contained on an IDS listing (e.g., PTO/SB/08 or equivalents) or PTO-892 in the file wrapper record of the parent application at the time inclusion of the continuing application into the RPA Initiative is determined.
Will there be multiple importations of citations from the immediate parent application into the continuing application in the first phase of the RPA initiative?
No. In the first phase of the RPA initiative, the Office will perform only a single importation of citations from the patent application. Any citations from IDS listings or PTO-892 forms appearing in the parent application after this single importation occurs will not be imported. However, the examiner will still consider the documents corresponding to citations not imported from the parent application in accordance with MPEP 609.02. To have such later-appearing citations printed on a patent issued from the continuing application, applicant must submit an IDS with the later-appearing citations in compliance with 37 CFR 1.97 and 1.98 in the continuing application.
Access to Relevant Prior Art (RPA) Initiative - Examiner Consideration
Will the Examiner consider all the documents corresponding to the imported citations?
If imported citations were compliant with 37 CFR 1.98 in the parent application, the examiner will consider the documents that correspond to the imported citations.
How will the Examiner indicate consideration of these documents on the record?
The examiner will indicate consideration of the imported citations in a Notice of Consideration. The examiner’s signature on the Notice of Consideration will indicate that the documents corresponding to all citations that have not been lined through have been considered. The examiner should inform the applicant in the first Office action of the reason(s) a citation was not considered.
Will the imported citations that have been considered by the examiner be printed on the face of the patent of the continuing application?
Yes, all citations that have been imported from the parent application and indicated as considered on the Notice of Consideration will be printed on the patent issuing from the continuing application. These imported citations will be marked with a double-dagger on the patent to distinguish them from the other citations of record.